Case Note & Summary
The plaintiffs, ITM Trust and its trustees, filed a suit for trademark infringement and passing off against the defendant, Educate India Society, alleging that the defendant's use of the mark 'ITM' for educational services infringed their registered trademark. The plaintiffs had registered the mark 'ITM' under Class 41 in 2004. The defendant claimed honest and concurrent use of the mark since 1994. The Notice of Motion for interim injunction was initially dismissed by a single judge on the ground of dissimilarity of marks, but on appeal, the parties agreed that the marks were identical, and the matter was remitted for consideration of the honest and concurrent user defence. The court examined the evidence and found that the defendant had been using the mark 'ITM' since 1994, prior to the plaintiff's registration, and had established a reputation. The court held that the defendant's use was honest and concurrent, and the plaintiff's delay in filing the suit (filed in 2012 despite knowledge of defendant's use) weighed against granting an injunction. The balance of convenience was in favour of the defendant. The court dismissed the Notice of Motion, refusing to grant an interim injunction.
Headnote
A) Trade Marks - Honest and Concurrent User - Section 12 of the Trade Marks Act, 1999 - The defendant claimed honest and concurrent use of the mark 'ITM' since 1994, prior to the plaintiff's registration in 2004. The court held that the defendant had established honest and concurrent user, as the use was long, continuous, and without any intention to deceive. The plaintiff's delay in filing the suit and the balance of convenience also weighed against granting an injunction. (Paras 1-20)
B) Trade Marks - Interim Injunction - Balance of Convenience - The court considered the balance of convenience and held that it was in favour of the defendant, as the defendant had been using the mark for a longer period and had established a reputation. The plaintiff failed to show irreparable injury. (Paras 15-20)
Issue of Consideration
Whether the defendant is entitled to the defence of honest and concurrent user under Section 12 of the Trade Marks Act, 1999, and whether the plaintiff is entitled to an interim injunction restraining the defendant from using the mark 'ITM'.
Final Decision
The Notice of Motion is dismissed. No order as to costs. The plaintiffs are not entitled to an interim injunction.
Law Points
- Honest and concurrent user
- Section 12 of the Trade Marks Act
- 1999
- Deceptive similarity
- Trademark infringement
- Passing off
- Interim injunction
- Balance of convenience
Case Details
2014 LawText (BOM) (09) 90
Notice of Motion No.310 of 2012 in Suit No.284 of 2012
Mr. Aspi Chinoy, Senior Advocate a/w Ms. Chandana Salgaoncar, Aditya Thakkar i/b Vigil Juris (for Plaintiffs); Mr. Arvind Chaudhary, i/b Amol Deshpande (for Defendant)
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Nature of Litigation
Suit for trademark infringement and passing off with Notice of Motion for interim injunction.
Remedy Sought
Plaintiffs sought an interim injunction restraining the defendant from using the mark 'ITM'.
Filing Reason
Plaintiffs alleged that the defendant's use of the mark 'ITM' for educational services infringed their registered trademark and constituted passing off.
Previous Decisions
The Notice of Motion was earlier dismissed on 20th July 2012 on the ground of dissimilarity of marks. On appeal, the order was set aside by consent and the matter remitted for consideration of the honest and concurrent user defence, with the parties agreeing that the marks were identical.
Issues
Whether the defendant has established the defence of honest and concurrent user under Section 12 of the Trade Marks Act, 1999.
Whether the plaintiffs are entitled to an interim injunction restraining the defendant from using the mark 'ITM'.
Submissions/Arguments
Plaintiffs argued that they have a registered trademark 'ITM' since 2004 and the defendant's use is infringing and amounts to passing off.
Defendant argued honest and concurrent use of the mark 'ITM' since 1994, prior to the plaintiff's registration, and that the plaintiffs delayed in filing the suit.
Ratio Decidendi
The defence of honest and concurrent user under Section 12 of the Trade Marks Act, 1999 is available to a defendant who has used a mark prior to the plaintiff's registration, provided the use is honest, continuous, and without intention to deceive. The balance of convenience and delay in filing the suit are relevant factors in refusing interim injunction.
Judgment Excerpts
The Plaintiffs claim to have a trade mark, ITM, registered under Class 41 (educational services) since 2004.
The learned Single Judge has not dealt with the defence of honest and concurrent user that has been set up by the Respondent.
Both the learned counsel state that the impugned order of the learned Single Judge was set aside by consent in the Appeal Court, and the matter remitted, but only for a consideration of the plea of honest and concurrent user.
Procedural History
Suit filed in 2012. Notice of Motion heard and dismissed on 20th July 2012. Appeal filed; order set aside by consent on 8th May 2013 and matter remitted for consideration of honest and concurrent user defence. Present judgment on 15th September 2014.
Acts & Sections
- Trade Marks Act, 1999: Section 12
